Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA494788
`ESTTA Tracking number:
`09/17/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Golden Grain Company
`09/16/2012
`
`555 Monroe Street
`Chicago, IL 60661
`UNITED STATES
`
`Attorney
`information
`
`Jeanette S. Zimmer
`PepsiCo, Inc.
`7701 Legacy Drive, Mail Stop 3A-421
`Plano, TX 75024
`UNITED STATES
`trademarks@pepsico.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85441203
`09/17/2012
`
`Publication date
`Opposition
`Period Ends
`
`03/20/2012
`09/16/2012
`
`West Coast Warmbloods
`11433 Cemetery Road SE
`Yelm, WA 98597
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 031. First Use: 2011/07/20 First Use In Commerce: 2011/09/01
`All goods and services in the class are opposed, namely: Edible horse treats
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`684132
`
`08/25/1959
`
`Word Mark
`
`RICE-A-RONI
`
`Application Date
`
`04/28/1958
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA494788
`ESTTA Tracking number:
`09/17/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Golden Grain Company
`09/16/2012
`
`555 Monroe Street
`Chicago, IL 60661
`UNITED STATES
`
`Attorney
`information
`
`Jeanette S. Zimmer
`PepsiCo, Inc.
`7701 Legacy Drive, Mail Stop 3A-421
`Plano, TX 75024
`UNITED STATES
`trademarks@pepsico.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85441203
`09/17/2012
`
`Publication date
`Opposition
`Period Ends
`
`03/20/2012
`09/16/2012
`
`West Coast Warmbloods
`11433 Cemetery Road SE
`Yelm, WA 98597
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 031. First Use: 2011/07/20 First Use In Commerce: 2011/09/01
`All goods and services in the class are opposed, namely: Edible horse treats
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`684132
`
`08/25/1959
`
`Word Mark
`
`RICE-A-RONI
`
`Application Date
`
`04/28/1958
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class U046 (International Class 030). First use: First Use: 1957/12/11 First Use
`In Commerce: 1957/12/11
`PREPARED PACKAGED RICE AND VERMICELLI DINNER
`
`U.S. Registration
`No.
`Registration Date
`
`1272046
`
`03/27/1984
`
`Word Mark
`Design Mark
`
`RICE A RONI
`
`Application Date
`
`10/14/1982
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 030. First use: First Use: 1981/09/00 First Use In Commerce: 1981/09/00
`Partly Prepared Packaged Rice and Rice and Vermicelli Dinner
`
`U.S. Registration
`No.
`Registration Date
`
`1590101
`
`04/03/1990
`
`Application Date
`
`08/21/1989
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`RICE-A-RONI
`
`NONE
`
`Class 030. First use: First Use: 1957/12/11 First Use In Commerce: 1957/12/11
`[ STUFFING MIX CONTAINING BREAD; ] RICE; NOODLES; ALIMENTARY
`PASTE; AND PREPARED AND PARTLY PREPARED MIXES CONSISTING
`PRIMARILY OF ALIMENTARY PASTE, RICE, OR RICE AND ALIMENTARY
`PASTE
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`1593258
`
`Application Date
`
`08/03/1989
`
`04/24/1990
`
`Foreign Priority
`Date
`RICE-A-RONI THE SAN FRANCISCO TREAT
`
`NONE
`
`
`
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 030. First use: First Use: 1959/00/00 First Use In Commerce: 1959/00/00
`PARTLY PREPARED PACKAGED RICE, AND RICE AND VERMICELLI
`DINNERS
`
`1593285
`
`Application Date
`
`09/14/1989
`
`04/24/1990
`
`Foreign Priority
`Date
`THE SAN FRANCISCO TREAT RICE A RONI
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 030. First use: First Use: 1989/05/01 First Use In Commerce: 1989/05/01
`RICE; NOODLES; ALIMENTARY PASTE; PREPARED AND PARTLY
`PREPARED MIXES CONSISTING PRIMARILY OF RICE, ALIMENTARY
`PASTE, NOODLES, OR RICE AND ALIMENTARY PASTE
`
`U.S. Registration
`No.
`Registration Date
`
`3301607
`
`10/02/2007
`
`Word Mark
`Design Mark
`
`RICE-A-RONI
`
`Application Date
`
`03/12/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 030. First use: First Use: 2006/12/31 First Use In Commerce: 2006/12/31
`Rice based side dishes
`
`
`
`Attachments
`
`72050478#TMSN.gif ( 1 page )( bytes )
`73400803#TMSN.gif ( 1 page )( bytes )
`73825326#TMSN.gif ( 1 page )( bytes )
`77128525#TMSN.jpeg ( 1 page )( bytes )
`NOO RICE A PONY.pdf ( 5 pages )(762400 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Jeanette S. Zimmer/
`Jeanette S. Zimmer
`09/17/2012
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application
`
`Mark
`
`Applicant
`Serial No
`
`Filed
`Published in the
`
`: RICE-A-PONY
`
`: West Coast Warmbloods
`: 85/441,203
`
`: October 6, 2011
`
`Ofiicial Gazette
`
`: March 20, 2012
`
`______________________________________________________x
`
`GOLDEN GRAIN COMPANY,
`
`Opposer,
`
`vs.
`WEST COAST WARMBLOODS
`
`-
`
`Opposition No.
`
`Applicant.
`
`———————————————————————————————————————————————————— --X
`
`NOTICE OF OPPOSITION
`
`Opposer, Golden Grain Company (“Opposer”), a California corporation,
`
`located and
`
`doing business at 555 West Monroe Street, Chicago, Illinois 60661, believes that it will be
`
`damaged by the registration of United States Trademark Application Serial No. 85f44l ,203, filed
`
`on October 6, 2011, in the name of West Coast Warmbloods (“Applicant”) for the mark RICE-
`
`A-PONY based on use of the mark in connection with “[e]dible horse treats” in International
`
`Class 031 and, having been previously granted an extension of time to oppose, hereby opposes
`
`the foregoing application.
`
`The specific grounds for this Opposition are as follows:
`
`
`
`1.
`
`For many years, Opposer has been engaged in the advertising, promotion and sale
`
`of a variety of food products, including rice.
`
`2.
`
`Since long prior to the filing date of the application-at-issue, Opposer has been
`
`identified with and used the mark RICE-A-RONI in connection with the advertising, promotion
`
`and sale of food products, including rice.
`
`3.
`
`Due to extensive and continuous advertising, sale, use and promotion of a variety
`
`of food products, including rice, in connection with Opposer’s RICE-A-RONI mark, this mark
`
`has not only acquired substantial public and consumer recognition throughout the United States,
`
`but has also enjoyed valuable goodwill, and become famous since prior to the filing date of the
`
`application-at-issue, solely signifying Opposer as the source of high quality products.
`
`4.
`
`Opposer has registered its RICE-A-RONI mark and is the owner of at least six (6)
`
`United States trademark registrations claimed in Opposer’s Pleaded Marks in the Opposition
`
`filing, each of which incorporates the designation RICE—A-RONI or Variants thereof.
`
`5.
`
`Opposer’s registrations for these marks are valid, subsisting,
`
`in full force and
`
`effect, and serve as evidence of Opposer’s exclusive right to use such marks in commerce on or
`
`in connection with the goods identified in the registrations, as provided by Section 33(a) of the
`
`United States Trademark (Lanham) Act, 15 U.S.C. § 1115(a). Further, many of Opposer’s
`
`registrations have become incontestable pursuant to Section 15 of the Lanham Act, 15 U.S.C. §
`
`1065. Hereinafter, Opposer’s foregoing marks are referred to collectively as the “RICE-A-RONI
`
`Marks”, unless otherwise specified.
`
`6.
`
`On information and beliefl on October 6, 2011, Applicant, West Coast
`
`Warmbloods, having an address at 11433 Cemetery Road SE, Yelm, Washington 98597, filed
`
`
`
`Application Serial No. 851441303 to register RICE-A-PONY, based on use of the mark in
`
`connection with “[‘e]dibl'e-horse treats” in International Class 031.
`
`7.
`
`Applica.-nt’s registration and use of the mark "sought to be registered "will likely
`
`dilute the distinctive quality of O'pposer’s RICE-A-RONI Marks in violation of
`
`15 U.S.C. §
`
`1 125(0).
`
`8.
`
`Applicanfs use of the mark sought to be registered for the goods "listed in its-
`
`application is barred by -the provisions. of-Section 2(d] of the Trademark Act of 1946 because
`
`said mark consists of or comprises a mark which so resembles Opp'oser’s: RICE-A-RONI Marks
`
`which have been in use and are also the subject -of prior registrations in. the United States
`
`Trademark Office, as to be likely, when used in connection with the.-products‘ of the Applicant to
`
`cause. confusion, mistake or deception.
`
`9.
`
`Opposer has priority over Applicant because Oppose_r’s use, application filing
`
`dates and registration dates for the RICE-A-RONI Marks precede the Applic_ant’s filing date for
`
`its application-at-issue and alleged date of first use.
`
`10.
`
`Applicant’s mark so resembles Opposer’s RICE-A-RONI Marks" as to be. likely to
`
`cause confusion, to cause mistake or to deceive with consequent injury to Opposer. Persons are
`
`likely to believe
`
`Applicant’s- products have their source in Opposer or that A'pplican't"s
`
`products are in some way legitimately connected or affiliated with, sponsored, ap'p'ro‘ved,_
`
`endorsed or- licensed by Opposer-when, in fact, they are not.
`
`11.
`
`Opposer will be datnaged by the issuance of -a registration sought by Applicant
`
`within the meaning of 15 U.S.C. § 1063 because such registration would support -and assist
`
`Applicant in the confusing, misleading, deceptive andfor dilutive use of Applic_ant’_s RICE-A-
`
`
`
`PONY mark, and would give color of exclusive statutory rights to Applicant in violation and
`
`derogation of the prior and superior rights of Opposer.
`
`WHEREFORE, Opposer prays that
`
`this opposition be sustained in its favor,
`
`that
`
`registration be denied to Applicant on its Application Serial No. 85f-441,203, and that the Board
`
`grant all further relief to Opposer that is necessary and just in these circumstances.
`
`Respectfully submitted,
`
`I GOLDEN GRAIN COMPANY
`
`
`
`Dated: September/_i2012
`
`By:
`
`_
`
`
`
`
`
`Jeanette S. Zim e_
`Attorney for Registrant
`7701 Legacy Drive
`Mail Stop 3A-421
`Plano, TX 75024
`Phone: (972) 334-2587
`Email: jeanette.zimmer@pepsico.com
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing, NOTICE OF
`OPPOSITION, has been served on the Applicant via First Class Mail,
`in an envelope with
`sufficient postage prepaid and addressed to:
`
`West Coast Warmbloods
`
`11433 Cemetery Road SE
`Yelm, WA 98597
`
`on Septemberg i ,'2012
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